DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/03/2025 has been entered.
Status of Claims
Claims 13 and 20 are canceled. Claim 26 is newly added. Claims 10-12, 14-19 and 21-26 are pending where claims 10 and 11 have been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10-12, 14-19 and 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0286547 A1 to Kim et al.
Regarding claims 10 and 11, Kim discloses a soft magnetic alloy overlapping the instantly claimed ranges as follows (Kim, abstract, para [0042])
Element
Claimed ratio
Kim ratio
Overlaps?
a
0.070-0.120
B+N+Al+Ti+Zr+Hf+Nb+Ta+Cr+Mo+Co+Ni: 0.0025-0.1
Yes
b
0.005-0.200
C: 0.02-0.08
Yes
c
0-0.180
B+N+Al+Ti+Zr+Hf+Nb+Ta+Cr+Mo+Co+Ni: 0.0025-0.1
Si + P: 0.02-0.16
Yes
β
≥0
Fe: 0.78-0.9575
B+N+Al+Ti+Zr+Hf+Nb+Ta+Cr+Mo+Co+Ni: 0.0025-0.1
Yes
α + β
0-0.50
Fe: 0.78-0.9575
B+N+Al+Ti+Zr+Hf+Nb+Ta+Cr+Mo+Co+Ni: 0.0025-0.1
Yes
Wherein the structure of Kim may be nanocrystalline or amorphous (Kim, para [0001]), meeting the instantly claimed limitations of “a structure including a Fe based nanocrystal.” Regarding the limitation “a nano-heterostructure in which a microcrystal is present in an amorphous material,” one of ordinary skill in the art would immediately envisage a structure containing both amorphous and nanocrystalline phases from Kim’s disclosure of nanocrystalline or amorphous.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Kim including the instantly claimed because Kim discloses the same utility throughout the disclosed ranges.
Regarding the composition based equations in the instant claims (i.e. 0.300≤b/(b+c)<1.000 and 0≤α(1-(a+b+c)≤0), the instantly claimed equations fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the alloy of Kim is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Kim including those which fall within the boundaries of the instantly claimed composition based formulas because Kim discloses the same utility throughout the disclosed ranges.
Regarding claims 12, 14, 19 and 21, the alloy of Kim overlaps the instantly claimed ranges.
Regarding claims 22 and 23, the soft magnetic alloy of Kim can be in the shape of a ribbon or powder (Kim, para [0052]).
Regarding claim 24, where a prior art component has the same function as the instantly claimed component, motivation to alter the shape of the component to any other equally useful shape is obvious to one of ordinary skill in the art absent evidence of new or unexpected results. See MPEP 2144.04 IV. In the instant case, it would be obvious to one of ordinary skill in the art to alter the shape of the alloy of Kim to any other equally useful shape, such as the instantly claimed shape, as any shape would serve the same purpose.
Regarding claims 18 and 25, the soft magnetic alloy of Kim can be in the form of a magnetic component (Kim, para [0062]).
Regarding claim 26, Kim discloses the Fe based nanocrystal is a nanocrystal, i.e. having a particle size of a nano-order. Although Kim is silent as to the lattice structure of the Fe crystal structure, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the soft magnetic alloy of Kim would be expected to have the same or similar crystal lattice as the instantly claimed soft magnetic alloy because the alloy of Kim has the same or substantially the same composition, structure and method of manufacturing.
Claim(s) 10-12, 14-19 and 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005187917 to Yoshizawa (cited by applicant in IDS, an English language machine translation has been relied upon for examination purposes).
Regarding claim 10 and 11, Yoshizawa discloses numerous soft magnetic alloys lying within the instantly claimed ranges, such as (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 which is similar to the instantly claimed composition as follows (Yoshizawa, abstract, para [0016-0026], Table 2):
Element
Claimed ratio
Yoshizawa (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 ratio
Lies within?
a
0.070-0.120
Hf: 0.001
Mo: 0.07
No
b
0.005-0.200
C: 0.09
Yes
c
0-0.180
B: 0.08
Yes
b/(b+c)
0.300-1.000
0.47
Yes
α(1-(a+b+c))
0-0.400
Co: ~0.247
Yes
β
≥0
Al: 0.01
Yes
α + β
0-0.50
Co: ~0.247
Al: 0.01
Co + Al: 0.257
Yes
Wherein the structure of Yoshizawa may contain crystals with an average grain size of 50 nm or less in an amorphous phase (Yoshizawa, para [0007, 0011]), i.e. meeting the instantly claimed limitations of “a structure including a Fe based nanocrystal,” and “a nano-heterostructure in which a microcrystal is present in an amorphous material.”
(Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 of Yoshizawa differs from instant claims 10 and 11 in that (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 of Yoshizawa contains Mo and Hf instead of Ta. However, Yoshizawa more broadly discloses that the Mo of the alloy of Yoshizawa may be replaced with elements including Ta, and doing so results in improvements in corrosion resistance, an expansion of the heat treatment temperature range, and refinement of the structure and discloses that Hf and Ta are substitutable equivalents for achieving these results (Yoshizawa, para [0010]).
Regarding claims 10 and 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the Mo and Hf of (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 of Yoshizawa with Ta as suggested by Yoshizawa. The motivation for doing so is that Yoshizawa more broadly discloses that the Mo of the alloy of Yoshizawa may be replaced with elements including Ta, V, Zr, Hf, Ti, Nb, and W, and doing so results in improvements in corrosion resistance, an expansion of the heat treatment temperature range, and refinement of the structure and discloses that Hf and Ta are substitutable equivalents for achieving these results (Yoshizawa, para [0010]) and substitution of one known element for another yields predictable results to one of ordinary skill in the art (see MPEP 2144.06 and 2143 B).
Regarding claims 12, 14, 19 and 21, (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 of Yoshizawa with the Mo substituted with at least one of Ta, V, Zr, Hf, Ti, Nb, and W as suggested by Yoshizawa would lie wholly within the instantly claimed ranges.
Regarding claims 15-17 and 22-24, the soft magnetic alloy of Yoshizawa can be in the shape of a ribbon, powder or thin film (Yoshizawa, para [0012]).
Regarding claims 18 and 25, the soft magnetic alloy of Yoshizawa can be in the form of a magnetic component (Yoshizawa, para [0001]).
Regarding claim 26, Yoshizawa discloses the Fe based nanocrystal having a particle size of a nano-order and a Fe crystal structure of body-centered cubic lattice structure (Yoshizawa, para [0021]).
Response to Arguments
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive.
Applicant argues that examples 9-12 and comparative examples 13-14 of the instant specification demonstrate the criticality of the instantly claimed Ta content range establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d) [R-2]. In the instant case, the data relied upon by applicant to show unexpected results is directed to an alloy of Fe(1-(a+b+c)TaaCbPc whereas the claims are directed to an alloy of (FeX1αX2β) (1-(a+b+c)TaaCbX3c, which is much broader than the range the alleged unexpected results occur. Thus, the alleged unexpected results occur only over a small fraction of the entire claimed range and are not commensurate in scope with the claims which the evidence is offered to support.
Applicant argues there is no teaching or suggestion in Kim that would lead to one of ordinary skill in the art to select Ta among the list of possible options for Z. This is not found persuasive because as stated in ln re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,783 (Fed. Cir. 1985).”
See also Merck & Co., Inc. v. Biocrafi Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference "discloses a multitude of effective combinations does not render any particular formulation less obvious." ); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives").
Applicant argues that Yoshizawa does not describe the specific substitution amount and does not provide any guidance that would lead one of ordinary skill in the art to arrive at the claimed range of (a), let alone choosing Ta. This is not found persuasive because it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the Mo and Hf of (Fe0.67Co0.33)bal.Mo7B8C9Hf0.1Al1 of Yoshizawa with Ta as suggested by Yoshizawa. The motivation for doing so is that Yoshizawa more broadly discloses that the Mo of the alloy of Yoshizawa may be replaced with elements including Ta, V, Zr, Hf, Ti, Nb, and W, and doing so results in improvements in corrosion resistance, an expansion of the heat treatment temperature range, and refinement of the structure and discloses that Hf and Ta are substitutable equivalents for achieving these results (Yoshizawa, para [0010]) and substitution of one known element for another yields predictable results to one of ordinary skill in the art (see MPEP 2144.06 and 2143 B). With regards to the claimed range of (a), substitution of the Mo and Hf in the alloy of Yoshizawa would result in a Ta content of 0.071, within the instantly claimed ranges.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CA 1222646 A discloses a soft magnetic alloy relevant to the instant claims.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738